Following the hearing at the Court of Justice of the European Union (CJEU), Advocate General Hogan has published his opinion on Case T-186/17 before the EU General Court (EGC), which ruled that the ‘e-commercial services’ and others in Class 35 of the applicant’s EU trademark WALLAPOP (mixed) shared few similarities with the retail services for sports footwear of the existing Spanish trademark WALA (mixed).
The Advocate General (AG) rules on the two parts of the WALLAPOP ground of appeal, the most interesting being the latter, which will be discussed below.
Wallapop claims in its appeal that the EGC misinterpreted the relevant factors to be taken into account when analyzing the similarity between the services in question, and in particular the following:
-first, that the distribution channels of the conflicting trademarks were similar;
-second, that the services referred to in the trademark application are retail services;
– third, that the purpose and public perception of the services in question are similar;
– fourth, that the services in question compete with each other.
In order to resolve this part of the appeal, the AG relies on previous CJEU rulings that have addressed this issue: the PRAKTIKER ruling and the TULLIALLAN BURLINGTON ruling.
As regards the distribution channels, the AG reaches the following conclusion: ‘the footwear sold by Unipreus online is also offered for sale on the Wallapop platform, although sold by third-party retailers and not by Wallapop itself. I therefore consider that, from the point of view of a consumer trying to buy the products in question, the Wallapop platform and the Unipreus website are similar distribution channels’.
As to whether or not the services of the WALLAPOP trademark are retail services, the AG considers that they do fall within the definition of retail services, since they all ultimately aim at promoting the sale of products to consumers.
Furthermore, as to whether the purpose and public perception of the contested services are similar, the AG understands that, as in the TULLIALLAN BURLINGTON ruling it is stated that the owner of a shopping mall is engaged in the provision of retail services for the purposes of Class 35, the same applies to the operator of a virtual shopping mall as the internet platform hosted by Wallapop, and therefore that the services are similar as to the purpose and public perception of the contested services.
Finally, the AG also comments on the competitive nature of the services in question, claim denied by WALLAPOP. According to the AG, the competitive nature is demonstrated by the fact that sports footwear marketed under the WALA trademark are also offered on the Wallapop platform.
For all these reasons, the AG understands that the ruling by the EGC is correct, and WALLAPOP’s appeal must therefore be dismissed.
The conclusions of the AG and the ruling to be delivered by the CJEU in this matter are relevant insofar as they resolve the difficult question of whether a retail service is similar, even to some extent, to the service provided by many online platforms today to enable users, whether companies or individuals, to offer and market products through such a platform.
By Jean Devaureix, Deputy Director of the Legal Advice Department at PONS IP